20 June 2019 (* )

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Invalidity proceedings — Partial declaration of invalidity — Word mark VIPER — Earlier national word mark VIPER — Genuine use of the earlier mark)

In Case C‑795/18 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 18 December 2018,

FCA US LLC, established in Auburn Hills (United States), represented by C. Morcom QC,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Seventh Chamber),

composed of T. von Danwitz, President of the Chamber, C. Vajda and A. Kumin (Rapporteur), Judges,

Advocate General: H. Saugmandsgaard Øe,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

1By its appeal, FCA US LLC seeks to have set aside the judgment of the General Court of the European Union of 18 October 2018, FCA US v EUIPO — Busbridge (VIPER) (T‑109/17, not published, EU:T:2018:697) (‘the judgment under appeal’), by which the General Court dismissed its action seeking annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 December 2016 (Case R 554/2016-1), relating to invalidity proceedings between Mr Robert Dennis Busbridge (‘the applicant for a declaration of invalidity’) and FCA US (‘the decision at issue’).

2In support of its appeal, the appellant relies on two grounds of appeal, alleging, first, infringement of the rights of the defence and, secondly, infringement of Article 57(2) and (3) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

The appeal

3Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

4That provision must be applied in the present case.

5On 11 April 2019, the Advocate General took the following position:

–set aside [the judgment under appeal];

–set aside the decision [at issue], or, in the alternative, refer the case back to the General Court for judgment in accordance with the Court’s decision;

–order EUIPO to pay the costs incurred by the appellant in connection with the present appeal as well as the costs of the proceedings before the General Court and before the Board of Appeal of EUIPO, and

–order that the application of the EUIPO decisions be suspended pending the hearing of the present appeal in accordance with Articles 278 and 279 TFEU.

3. For the reasons set out thereafter, I propose that the Court should dismiss the appeal in the present case as, in part, manifestly unfounded and, in part, manifestly inadmissible in accordance with Article 181 of the Rules of Procedure.

The first ground of appeal

The second ground of appeal

Since the first ground of appeal is manifestly unfounded and the second ground of appeal is manifestly inadmissible, the appeal must be dismissed in its entirety and the appellant must be ordered to pay the costs pursuant to Article 137 and Article 184(1) of the Rules of Procedure.’

6With regard to the second ground of appeal, it is necessary, in the first place, to add that, to the extent that the appellant criticises the General Court for upholding the Board of Appeal’s analysis regarding the definition of the word ‘kit car’ as set out in the Oxford dictionary, it is sufficient to note that the appellant does not explain which error of law, in its view, the General Court made in upholding that analysis. Accordingly, on the basis of the case-law cited in point 14 of the Advocate General’s position, it is appropriate to reject that ground of challenge as manifestly inadmissible.

7In the second place, the appellant alleges that the General Court failed to address the ground of challenge it submitted in support of that second submission, claiming, in essence, that the definition of ‘kit car’ as set out in that dictionary is not a permissible basis for establishing that the goods sold by the applicant for a declaration of invalidity were sports cars in kit form.

8However, that ground of challenge is based on a manifestly incorrect reading of paragraph 60 of the judgment under appeal and must, therefore, be rejected as manifestly unfounded. Indeed, in that paragraph of the judgment, the General Court addresses that ground of challenge by noting that it is clear from the decision at issue that the Board of Appeal based its analysis on the evidence submitted by the applicant for a declaration of invalidity and dating from the relevant period, and, in particular, on the articles published in the specialised magazine Kitcar as well as on the frequent and regular insertion of advertisements concerning the earlier mark in that magazine.

In the third place, to the extent that the appellant alleges that the General Court ignored the arguments put forward in the application lodged before the General Court in order to challenge the Board of Appeal’s finding that ‘sports cars in kit form’ constitute an ‘independent subcategory’ of the broader category of ‘sports cars’, it is sufficient to note that the General Court cannot be criticised for not adjudicating on a ground of challenge that was not raised before it (see, by analogy, judgment of 22 October 2015, AC-Treuhand v Commission, C‑194/14 P, EU:C:2015:717, paragraph 55).

10As the General Court observed in paragraph 39 of the judgment under appeal, in the context of the application lodged before it, the appellant did not raise any argument specifically challenging the Board of Appeal’s finding that ‘sports cars in kit form’, for which the earlier mark was found to have been used, constitute an independent subcategory of the broader category of ‘sports cars’.

11It follows that that ground of challenge must be dismissed as manifestly unfounded.

In the fourth place, the appellant alleges that the General Court held, in paragraph 55 of the judgment under appeal, that the arguments claiming the incomplete nature of the kits offered by the applicant for a declaration of invalidity were based on a misreading of the decision at issue.

The appellant claims that this alleged error of law on the part of the General Court, first, stemmed from the General Court’s assertion, in paragraph 51 of the judgment under appeal, that the Board of Appeal did not define, contrary to what the appellant submitted, a kit car as a kit which includes all the parts necessary for assembling a car, and that it found that the earlier mark had been used for sports cars in kit form, despite the need for, in respect of certain vehicle components, a donor vehicle. However, according to the appellant, the Board of Appeal could not validly have defined a kit car in such terms. Secondly, according to the appellant, the General Court, in paragraph 52 of the judgment under appeal, in effect accepted and by implication wrongly accepted the Board of Appeal’s reference to the ‘comprehensive nature’ of the kits of the applicant for a declaration of invalidity. Thirdly, in the appellant’s view, the General Court’s finding in paragraph 53 of the judgment under appeal, that such a ‘fact’ did not make it possible to conclude that, in the present case, the Board of Appeal had found that the goods sold by the applicant for a declaration of invalidity were kits containing all the components necessary to build a car, indeed supports the argument advanced on behalf of the appellant throughout, namely that the substantially incomplete kits offered by the applicant for a declaration of invalidity could not validly be called ‘kit cars’ as defined in the Oxford dictionary.

In that regard, it should be noted, first, that in so far as the appellant alleges that the Board of Appeal incorrectly defined the term ‘kit car’, it is sufficient to reject this argument as manifestly inadmissible on the basis of the case-law cited in point 11 of the Advocate General’s position. Next, it must be held that the General Court, in paragraph 52 of the judgment under appeal, contrary to what the appellant submits, did not endorse the Board of Appeal’s reference to the ‘comprehensive nature’ of the kits of the applicant for a declaration of invalidity, but merely found as a fact that the ‘Board of Appeal referred, in response to the [appellant]’s arguments, to the “comprehensive nature” of the kits proposed by the applicant for a declaration of invalidity under the earlier mark’. The appellant’s argument is thus based on a manifestly incorrect reading of the judgment under appeal and must, therefore, be rejected as manifestly unfounded. Finally, as regards the appellant’s argument concerning paragraph 53 of the judgment under appeal, it should be noted that the appellant merely disputes the General Court’s finding in that paragraph of its judgment without developing any specific legal argument capable of establishing that that judgment is vitiated by an error of law. Therefore, in accordance with the case-law cited in point 14 of the Advocate General’s position, that argument must be rejected as manifestly inadmissible.

15It follows that the appellant’s argument referred to in paragraph 12 of the present order cannot succeed.

In the fifth place, the appellant alleges that the General Court failed, in paragraph 57 of the judgment under appeal, to represent fairly the arguments it put forward before that Court, before reiterating, in essence, those arguments.

The appellant thus merely reproduces arguments it has previously put forward at first instance, without developing any specific legal argument capable of challenging the General Court’s assessments. Accordingly, on the basis of the case-law cited in point 14 of the Advocate General’s position, it is appropriate to reject that ground of challenge as manifestly inadmissible.

In the sixth place, the appellant criticises the General Court, first, for applying in paragraph 59 of the judgment under appeal, by analogy, paragraph 41 of the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145), although the facts of the case at issue are different, in its view, and, secondly, for finding, pursuant to that case-law and on the basis of the evidence submitted, that the question whether all the components of the VIPER sports car in kit form were manufactured or sold by the applicant for a declaration of invalidity was not decisive.

In that regard, suffice it to note that that ground of challenge, under cover of an alleged error of law, seeks, in reality, to secure from the Court of Justice a new appraisal of the facts and a new assessment of the evidence submitted at first instance, without putting forward any distortion of those facts or that evidence.

Therefore, in accordance with the case-law cited in point 17 of the Advocate General’s position, such a ground of challenge must be rejected as manifestly inadmissible.

For those reasons and for those given by the Advocate General, the appeal must be dismissed as, in part, manifestly inadmissible and, in part, manifestly unfounded.

Costs

22Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those Rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the respondent and therefore before the latter could have incurred costs, the appellant must be ordered to bear its own costs.

On those grounds, the Court (Seventh Chamber) hereby orders:

The appeal is dismissed as, in part, manifestly inadmissible and, in part, manifestly unfounded.

FCA US LLC shall bear its own costs.

Luxembourg, 20 June 2019.

Registrar

President of the Seventh Chamber

*

Language of the case: English.